Edmund Jason Baranda

External Expert, South-East Asia IPR SME Helpdesk

Managing Partner, Baranda & Associates – Rouse

29 April 2020

Managing Intellectual Property During the COVID-19 Pandemic

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• Latest developments in the Philippine Intellectual Property landscape

• IP protection and compliance through the use of technology / managing

intellectual property portfolio amidst COVID-19

• Post-COVID-19 IP trends

Agenda

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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• Utilize E-Services of IPOPHL

• Confirm deadlines/extension of deadlines

• Identify matters that are solely for offline compliance/physical filing

• Online use of TM

*Enhanced Community Quarantine period in Metro Manila (where IPOPHL

is located) is 15 March 2020 to 15 May 2020.

IP protection and compliance through the use of technology / Managing intellectual property portfolio amidst COVID-19

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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• Searches still available for trademarks, patents, utility models and industrial

design

• Watch out: There may be delays in updating registry data on prior

trademarks/prior arts. Additional search after the lockdown is encouraged.

E-Services of IPOPHL

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http://www.ipophil.gov.ph/online-filing/

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• Manual filing is suspended

• Use online filing system of IPOPHL - available for trademarks, patents, utility

models and industrial design

• No online system for copyright recordal, but this will not affect rights of IP

owner as protection attaches from the moment of creation

E-Services of IPOPHL

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

http://www.ipophil.gov.ph/online-filing/

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• Other requirements (POA, DAU, priority claim) may also be submitted online.

• eCorr system is available - IPOPHL communications relating to

applications/registrations are sent via email. However, this is not heavily used

because IPOPHL will only process applications after the lockdown.

E-Services of IPOPHL

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

http://www.ipophil.gov.ph/online-filing/

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• Payment of filing fees

- Pay online; or

- Within 60 days from due date

• Pleadings, documents and other payments

- Within 60 days from due date

- But those falling due from 16 March 2020 to 31 March 2020 only up to 31 May

2020 (IPOPHL MC NO. 2020-011).

Confirm deadlines/extension of deadlines

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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• E-Services of IPOPHL for patents, utility models and industrial applications

are, for now, only for new filings

• Filing of TPO/AI is within 60 days from publication/request for substantive

examination under patent rules

• On 20 April 2020, IPOPHL issued Memorandum Circular No. 2020-01 (MC

2020-010)

- Extension of deadline due to the lockdown will cause delay in processing of patent

applications for personal protective equipment (PPE), medical/health care

equipment/devices, and pharmaceutical products which are considered urgently needed

to contain the Covid-19 situation (“PPE and medical products”)

Filing of Third Party Observation (TPO) and Adverse Information (AI)

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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• Extension of period to file all papers, documents and payments shall not

apply to the PPE and medical products

• Filing of TPO/AI due from 16 March to 21 April 2020 – file online (via email to

bop@ipophil.gov.ph) or file on or before 11 May 2020

• Filing of TPO/AI due from 22 to 30 April 2020 – file online (via email to

bop@ipophil.gov.ph) or file within 15 calendar days from due date

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

Filing of Third Party Observation (TPO) and Adverse Information (AI)

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• Hearings and mediation before IPOPHL

• Submission of documents that require notarization – e.g. Declarations of

Actual Use, Verified Pleadings, etc.

• Patent/UM/ID patent application-related submissions (NOT new filings)

• Prepare human resources for surge of filings/queues when complying with

requirements after the lockdown

Matters for offline compliance/physical filing

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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• Marks vulnerable to cancellation for non-use

• no express exception yet provided for the period of lockdown or under the “new

normal”

• Online use of the mark, if applicable, may be suggested to IP owner

• Shift to online markets/transactions facilitated by Covid-19 situation

- A must to monitor online markets for bad actors: infringements and bad faith applicants

Online Use of Trademarks

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Post Covid-19 IP trends

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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• Online market preference

• PPE, medical/health devices and pharmaceutical products

• Challenges for non-Covid-19 essential brands

Post Covid-19 IP trends

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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• Both IP owners and infringers will intensify marketing online and use of

online markets

• Online monitoring and enforcement will become more crucial

- To remove ads/links/websites for counterfeit products

- To redirect traffic to legitimate distribution channels

• IP owners/representatives to heavily use notice and takedown systems of

online platforms

Online market preference

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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• PPE, medical/health devices and pharmaceutical products are currently in

high demand; demand is likely to be sustained in the coming months

• Projected increase in counterfeiting of such products

- IPOPHL reported that in the middle of the lockdown, there are complaints filed against

sellers of counterfeit PPEs, including face masks and N95 respirators (https://www.ipophil.gov.ph/news/ncipr-calls-on-whole-of-society-vigilance-on-counterfeiting-piracy-amid-covid/)

• Many brand owners will venture into producing Covid-19 essential products

• Opportunity for SMEs

Increased demand for PPE, medical/health devices and pharmaceutical products

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• Sample of ad for products marketed to address Covid-19 situation

Increased demand for PPE, medical/health devices and pharmaceutical products

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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• Sample of ad for products marketed to address Covid-19 situation with

unauthorized use of a mark

Increased demand for PPE, medical/health devices and pharmaceutical products

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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• Enforcement actions done during the lockdown in Metro Manila show the

priorities of local enforcement agencies which may extend after the lockdown

Increased demand for PPE, medical/health devices and pharmaceutical products

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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• IP protection/compliance with regulations (e.g., FDA) for Covid-19 essential

products

- File patent applications for Covid-19 essential products

▪ If no patent here, part of public domain so can manufacture locally

▪ If drug/medicine is patented, can do parallel importation which is allowed under the Cheaper

Medicines Act

- Licensing opportunities for Covid-19 essential products- List of Covid-19 related technologies and classifications to facilitate research on technologies addressing Covid-19:

https://patentscope.wipo.int/search/en/covid19.jsf

- Comply with FDA regulations

▪ Guidelines for the Registration of Drug Products under Emergency Use (DEU) for the

Coronavirus Disease 2019 (Covid-2019)

▪ Off-label/unapproved use

Increased demand for PPE, medical/health devices and pharmaceutical products

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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• Non-Covid-19 essential brands will face challenges as consumers reduce

spending

• Many brands for food, household, hygienic and cosmetic products are likely

to recover/sustain their current market

- Must monitor infringers that attract buyers through lower price offers

• Luxury and hospitality industry brands are hard hit and may consider

abandonment of certain portfolios.

- May be taken advantage of by bad faith applicants

• Price gouging should be monitored as reputation of brands may be affected

Likely challenges for other brands

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

An initiative of the© European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

© European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

Thanks for your attention

Questions?

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

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Thank you for your attention!

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© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.